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By J.D. Houvener
Patent Attorney and Founder

Juvenile your host of the bold today show uh where we’re going to answer any questions about patent law that you may or may not uh have on your mind right now uh but i’m welcoming all business owners uh entrepreneurs inventors of course uh men women uh all genders all ages some of you may not know invention being an inventor there’s no age requirement you don’t have to be 18 or show id or anything as long as you’re able to write down and describe in words or through drawings you can get a patent through the u.s trademark because patented mark office so um very good well first minute or so wait for people to join in um for those that are just joining in uh first time viewers we’re here every week every wednesday at 9 a.m pacific and noon on the east coast and this is a live q a with myself i’m the owner of a bold patins law firm behind me i’m a patent attorney used to be an engineer at boeing uh and a few other things so um bring on all those live questions i will prioritize those above any of the uh the questions that came in during the week through and i’ll wait for some people to join in here over the next couple minutes and we’ll jump into our topic today which is going to be ip101 i love jumping into this because it’s awesome people are sometimes confused about the different areas of intellectual property known as ip and this is just a nice opportunity you know as we’re getting into fall people are getting serious you know kind of cracking their knuckles getting ready to you know jump into something serious in the fall of course i’ve got legal notice here the inter exchange if we do end up getting into uh you know a live dialogue i i am not giving legal advice okay just gonna be talking about the law in general and i’ll be able to give you uh you know potential answers to hypotheticals or even situational questions but i’m not gonna give you legal advice and this is not a confidential discussion of course this is a live broadcast so please don’t share anything confidential not the right form to share your invention uh if it has not yet been publicized so uh thank you for that note and for those that are waiting to see what to do and the way you want to contact us i know that we i will be providing a link later on for you to build a book a consultation uh with one of our uh patent attorneys okay um so we’re just a few minutes out um i wanted to show you guys one cool thing that came up i got finally got the copy of my new book and you know i’ve kind of gotten a habit of writing books uh this is my latest this is uh the physicians guide to patents so i wrote a book specifically to physicians and i didn’t discriminate in the front cover actually the front intro i talked about all different types of doctors okay people that are in the healthcare industry this would apply to everyone from orthodontist family care you know practitioners uh neurologists oncologists chiropractors dentists and in fact dentistry is the example i used um dr bright and his assistant mrs bulb she actually ends up being the inventor uh in this example that i carried through so um if you want a copy of this if you’re a physician or maybe you know a physician um i would love to get you a copy of a physical book and of course a pdf

just for you being download on this show all right well we’re a couple minutes into it i think i’m going to jump in um no live viewers right now and that’s okay but if you’re watching this after the fact and you want to get a hold of me i’m going to put my contact information here below that’s my direct email i’m pretty responsive uh during the week and you can send in a text message as well to that 206 number i’ll generally go back with you within the same business day cool well let’s share my screen i’m gonna dig into ip101 and uh i’ll share my presentation we’ll take some time looking at the differences in the areas of ip uh to illustrate property ip is made up of four main areas uh patents of course also trademarks copyrights and trade secrets those are the four pillars that hold up the uh the umbrella of intellectual property and so what is it right what and so generally it’s it’s a it’s a property of a product of the minded human intellect um and why is it important well it’s a wonderful way to reward inventors uh allow them to the opportunity to make money a commercial gain for sharing their ideas and interventions with the world so patents are all about you know protecting and allowing you you know this monopoly okay we probably all have seen or maybe if you haven’t seen it you’ve heard of a slinky i love this example goes way back to 1947. um awesome right you know it’s new non-obvious and has utility and utility doesn’t need to be you know some sort of mechanical advantage or some sort of scientific uh breakthrough utility can definitely be entertainment you know much like the slinky was so um very cool so there it is as an example from uh from way back um 80 years ago you get 20 years of protection for a utility patent so what do you need to do and what does your invention qualify and you know most inventions do let’s just start with that if you’ve got a machine something that’s been manufactured you can build it if it’s a composition of matter like at the atomic level a new mixture formula or a new process and process is huge and really takes steps in the order of operations method or process of doing things in the real world it’s eligible okay and so this really encompasses everything the only few things that don’t fall into this bucket are things like laws of nature right gravity or you know certain equations and pure algorithms that are just matters of fact or laws of nature products of of the earth you’re not going to get ownership and protection over that you’ve got actually has to be from your own mind and own ingenuity can’t be something that’s already existing in the world um so this is a long list here i’m not going to go through all this but it’s kind of fascinating to know that in order to get a patent uh application you know date which is super important also called the filing date um you know because the way the the law is set up now uh we reward inventors that file right that say you know that are willing to share their invention and not keep it a secret you only have to file your drawings your spec which is the written description and a set of claims in order to get that filing date and you’re the first to invent everything else can come later right you could pay later you can tell them basically who you are later but as long as you share what your invention is uh they’re gonna get you that filing date okay um going way back way back to the constitution the founding fathers believed so powerfully they wanted to make sure they rewarded people for you know for sharing their ideas right they want to give exclusive rights to their discoveries to promote the progress of science and useful art so this is sort of you know perhaps one of the major reasons why the us became such a dominant force in technology because we rewarded companies individuals for showing and you know providing evidence here’s the next improvement here’s the next way to solve this problem and they give a patent for that solution so kudos to the founding fathers for setting this up right so um lots of stuff came up with patent i don’t want to mire in the details here um you know how do you enforce your rights you know definitely take them to federal court go to the patent tron appeal board um you know you can get a bloody opinion send a cease and desist letter settle um if things get messy then go to court right a lot of our our inventors make money through licensing or through sale so the patent rights act much like any other asset we think of like a you know owning of your home a deed to your house car uh something that’s tangible and this is not quite you can’t touch and feel the rights but it’s they act the same way and that they’re fully licensable transferable uh defendable presence you know heaven forbid you pass away they can be passed along through your well and of course you can assign them which just means you can transfer ownership all right i want to go through trademarks let me see if you have any live questions here so far on patents okay nothing came through just yet so let’s look at uh i think we’ll look at trademarks okay

all right all right here we go so uh trimworks the whole base is about the customer’s perspective right who is looking at your products or services and what do they think right what do they actually know about your company how do they associate those goods and services to you to your company that’s it that’s trademark law and in order to get a registration okay you have to be distinctive i mean you have to stand out and be actually different the word itself or the the design i mean the logo has to be different enough than your competitors that are selling the same types of goods and services that’s really that hopefully summarizes it i mean some of these famous marks you see over here they’re able to enjoy some additional benefits right you know the golden arch is probably the most famous trade work in the world i mean this got so much recognition that even people that tried to make big changes um get busted right because they’re using the same colors they’re using the arches and even kind of an attempt at changing the arch that’s not good enough these companies all got shut down by mcdonald’s right because customers look at that and they think oh that looks like mcdonald’s that was probably you know just as good of a hamburger as mcdonald’s or i feel more comfortable here so i’m gonna go to this restaurant because it’s that good will that goodwill that is that has been brought up and earned by mcdonald’s not these companies that are infringing okay so that’s really trademarks in a nutshell let’s take a peek at copyright you know copyright is is vast fast fast passing copyright covers really any creative art um meaning anything that’s created with respect to you know from your own mind that is fixed in a tangible format okay and that just means it can be recorded or replayed or shown such that you know someone else could go take it and make copies of it if it’s you know if you write it you know make a beautiful painting but it was it was a dry erase marker and after you create it you erase it and no one took a picture of it and it never got recorded yeah you can’t get copper protection for it because it there’s no validation no way to verify that it ever existed so that’s sort of the the hallmark uh the three requirements that must come from your own mind must be independent created it must be an artistic expression which is very very low bar and three it must be fixed in a tangible means so that it can be you know cognized right really understood as to what it is within the four corners and to get a registration you can see an example of registration uh through the library of congress mind you not the u.s patent and trademark office library of congress a different section of the government uh we’ll actually give a registration number um and we’ll provide you know primo fascia evidence which is a fancy word for on its face right you know what what the actual um artistic work comprised of who made it at what time so that if it does end up getting litigated if there is a future infringement suit or some you know adjudication as to the validity of the copyright you can use that registration uh for the judge they don’t have to you don’t have to prove in another way that you actually are the author so it’ll be um helpful copyrights cover music artistic expressions i mean you think paintings sculptures all sorts of different uh different ways you can be artistic dance and all sorts of ways all right trade secrets this is really cool subject uh because it really is state specific in a way every state has laws on the books so for example washington this is their uh revised code of washington 19.108 the requirements are usually the same because what’s nice is there is a uniform trade secret act that was put in place you know years back and most states have adopted that thank goodness so we have these three main elements you know how do you get a trade secret well first of all one of these big notions is that people think sometimes when you know to get a trade secret some government agency is going to give you a certificate in this case it’s not true right you know you don’t you’re not supposed to tell so keeping it a secret just meeting these three elements you have a defensible trade secret so if you’re making efforts to keep it secret okay and that’s kind of a high-level rule but using modern technology right using available security measures uh you know two factor authentication uh making sure you’re not you know leaving the sticky note with the password you know right on the kitchen uh you know the shared you know communal water uh watering hole or something like that right we actually make an effort to show that it’s uh it really is confidential the information has to be valuable and one great test here is to see if this got in the hands of the competitor would it be valuable would they be able to put it to use right away and make money with it and the other one is it’s not easily ascertainable meaning it’s not something that the public generally knows that doesn’t need that doesn’t mean the public couldn’t know it it also means the public doesn’t know it so meaning you can actually have a trade seeker that’s enforceable defensible even though many other people or companies have the same secret information it’s really fascinating subject but as long as they’re all on their own keeping it confidential and it’s not known in the public it can still qualify okay all right that is really it i want to go too much more and perhaps more some of you guys that’s the uh those are the nuts and bolts of intellectual property those main areas of patents trademarks copyrights and trade secrets i do wish we had a bigger live audience here today uh for those q a but because we don’t i will jump to the questions and go to our first one which is out of seattle washington which was asked just three days ago and this one’s a little bit lengthy and so i will kind of set the question up and then i’ll go through their their sub questions

all right so their question is how to modify and revive an abandoned utility patent application which is abandoned by a scam law firm five years ago i have a problem about my patent i’ve obtained a utility fat application for my invention about five years ago the law firm which i worked with started to register for my utility patent application but after a year they told me they have closed their company and they abandoned my application which means all my four thousand five dollars and efforts are gone they have given me

continues on here

a receipt of the utility patent application and now i’ve modified the invention one to patent again okay well this is a true tragedy it’s too bad um that you know this prior law firm didn’t take care of you before they wrapped up business and uh you know for the same reason it’s you know it’s a shame that you didn’t necessarily know about it or know what to do you weren’t advised on how to take action to uh you know make sure you didn’t allow that application to go abandoned so sorry that happened to you what i will say and let me just put these other questions that you asked here on the board before i get into my answer so there are kind of two questions that came out of that is it possible to apply my modifications to the previous application and obtain the patent after these five years what shall i do and the question number two is is there any possibility to refund some of the money which is paid to the office on fees okay so question one um it can be a little detailed i would say um before you start applying modifications you would need to make first the effort to revive the original okay you can certainly petition to revive a application it gets harder and harder the longer you wait since abandonment um you know there are kind of three or four different ways a rationale as to why you might need to petition to revive um you’ve got a really good uh argument that your attorney that was your you know when you you were relying on for information and correspondence from the patent office misled you and perhaps even acted in malpractice to allow the patent application to go abandoned without really taking action and informing you on how you could avoid that so explaining that may win it on its own there is a second one where they may come back and say well okay even if that’s true and you were notified that was abandoned why did you not do anything for five years or maybe four years right um and then you could have a second sort of sub-argument maybe it’s if there’s a financial issue right maybe though you didn’t necessarily want to pursue it based on the fact you didn’t have any money and they may request some information with respect to your income and tax returns um it may not get that far it may be enough to just say that look your attorney dropped the ball and you thought it was moving forward and even though it took so long you’re now at the point where you’re ready to move forward with it and handle it on your own or hire new council to help you with it so reviving that first one is the first step if you’re able to succeed and get back on the on the on track to uh to prosecuting your patent application that’s when you could work with your patent attorney you’re working with or even if you’re you know filing pro se on your own you could follow what’s called a continuation application and if those modifications uh are significant enough right improvements are you know so big that they would be deemed to be new matter of course it’s a legal question you know meaning is that uh that new improvement or modification big enough to where it really wasn’t discussed in enough detail in the original spec as filed then you would need to file this continuation application it is certainly possible that if they’re just relatively minor they’re just additional details of what you originally filed you could file a supplementary specification uh which may go well you know in terms of uh you know the examination getting that re-examined back with that uh same examiner so thanks for that question your second part of the question is trying to get a refund from the patent office i have never seen the patent office give refunds uh and certainly not after five years it is a shame i think the majority of that money that the sounds actually went to the law firm um so i’ll leave that to you as to whether you want to go try to get that money back from those individuals or that it may already be too late to do that but thank you for your question that was really cool appreciate the details okay probably just one or two more questions here just close the door

uh with one question on patent infringement and it will probably wrap up here

all right so this one is out of new york four days ago okay so

i’ll put the question in the comments

all right so will i infringe a patent if i make an electric skateboard and sell it despite the fact that electric skateboard is patented it is possible for me to make this type of product without having wheels boards trucks motors pulleys and a battery but in the patent they claim all the above i’ve noticed multiple companies doing their own luxury skateboard product and i was wondering can i do the same without any backlash from the owner of the patent here’s the patent number um you know i’m just like here obviously i may just pull that patent up for just a second might be a cool way to show how to look up patent applications as well okay so let’s put this down and i’ll go share my screen

and maybe watch the top of the fact that’s curious on how to look up uh patent google patent pretty awesome and right there i just copied and pasted that application number you can see it’s electric skateboard and you can pull it up right here so the underlying patent

let me just a little bit more to pull up here now this is a publication number but it did result in a patent i assume at some point but just so you know this is just a publication that’s a publication number um and we have to do a little bit more research to see if this actually got granted let’s assume that this this application got granted um

yeah i’m kind of curious actually all right so i’m going to say one more step i don’t want to bore you guys too much

i’m curious to see if this patent actually got granted

you’ve got a public pair this is the patent application retrieval system you can search by publication number

or patent application number

okay and this does happen this is this is live and just hit refresh

okay so here it is um and this is a patented case okay you see the application that i searched that 13-9 954 768 did result in a patent and so they can go to publish documents patent number 9387

and so we’re going to view full images

let’s see it on the full pattern side okay so nine three eight seven three eight eight let me go back over to google if we wanted to let’s just show you again you could type in that patent number which is going to give you the more final

patent right there okay so that’s actually the true patent see the difference the patent number issued at the top as opposed to just the output the publication number so let’s go quickly to the claims i know it took a little bit while on that it’s always going to show people how to actually go do searching on their own so heading down to the claims this is a monster claim wow this tells me that this is extremely narrow okay they mentioned claimed as an assembly for motorized for motorizing a skateboard comprising all of these things okay there’s a lot a lot of elements here so i’ll just go through quickly this is a motor mount uh the truck has a bushing and a kingpin the skateboard axle passes through the hanger a pulley the pulley is positioned on the axle a drive wheel hub where the hub is positioned on the wheel hub surrounding the cir axle a torque transfer mechanism where that torque transfer mechanism is further configured on the drive box more clarification about the torque transmittance is interconnected with the motor axle drive axle wherein the pulley and wheel hub are connected and then lastly where the pulley interconnects with the wheel and up and drive hub so what i’m saying by this is a very very long claim in order for this patent to be infringed every single element of that claim every little clause every word honestly every part of this must be true so if just directly i can tell you that if you’re going to make a new assembly for motorizing a skateboard if you’re able to find a way to do that without having a drive pulley i mean this is one element if you can make it without having a drive pulley or make it to where the axle doesn’t pass through a hanger or make it to where the the drive wheel hub um you know is not it is not positioned to where any portion of it touches the surrounding axle right you see them getting it if there’s no torque transfer mechanism at all then you’re not infringing okay so if any one of these is missing if any one of these elements is not found in what you’re producing this patent is not infringed okay now to get a written opinion on that you’re going to want to contact me you can use that information i gave you up above i’ll find a pat attorney he doesn’t have to be our firm and myself of course but uh current opinion is something you can rely on that someone investing in your product maybe a big manufacturer would probably want to get and we do deliver that to quite a few inventors and business owners but that is it appears this to be a relatively straightforward uh patent to get around right to design around and avoid infringement that doesn’t mean you would avoid a lawsuit okay anyone can sue anyone unfortunately in this world but you know that you’d be on solid ground if you were ever challenged all right well i hope that answered those two questions thoroughly i’m glad we get to those um again hope you guys will join us next week i’ll be here uh every wednesday 9 a.m pacific and noon on the east coast have a great issue everybody go big go bold

About the Author
J.D. Houvener is a Registered USPTO Patent Attorney who has a strong interest in helping entrepreneurs and businesses thrive. J.D. leverages his technical background in engineering and experience in the aerospace industry to provide businesses with a unique perspective on their patent needs. He works with clients who are serious about investing in their intellectual assets and provides counsel on how to capitalize their patents in the market. If you have any questions regarding this article or patents in general, consider contacting J.D. at